The changes being made by the Act affect nearly all of the IP Acts and are the Government’s first legislative response to the report by the Productivity Commission on the appropriateness of Australia’s IP legislation. Some of the more notable changes are / will be:

Currently a trade can be removed from the register on account of non-use for a continuous period of 3-years ending one month before the non-use application was filed provided at least 5-years have passed since the trade mark application date. The Trade Marks Act 1995 will be amended (at the latest by 24th February 2019) so that a non-use application can be filed provided at least 3-years have passed since the trade mark application date, although in practice this will need to be at least 3-years and one month.

Creating more certainty for parallel importers by creating an exception to trade mark infringement where the importer has made reasonable enquiries before making use of the goods and concluded by the time they used the goods that the trade mark had been applied to the goods by or with the consent of the trade mark owner. This applies to infringement actions commenced on or after 25th August 2018, whether or not the conduct in question occurred prior to that date.

The unjustified threats provisions in the Designs Act, Patents Act and Trade Marks Act will be strengthened (at the latest by 24th February 2019) by allowing a Court to award additional damages on account of the severity or flagrancy of the conduct or in order to deter others from such behaviour. Further, that infringement proceedings have already commenced will no longer be a defence to making unjustified threats. These unjustified threats provisions will also be introduced to the Plant Breeder’s Rights Act.

Legislation to give effect to Part 2 of the Government’s response to the Productivity Commission’s report should be introduced soon and will include:

Amending inventive step requirements for Australian patents;

Introducing an objects clause into the Patents Act;

Phasing out of the innovation patent system;

Amendments to the Crown use provisions of the patents and designs legislation; and

Amendments to the compulsory licensing provisions in the Patents Act.

2. Patents / Plant Variety Rights

New Zealand

Issues Paper on Plant Variety Rights Act 1987 Released
The Ministry of Business, Innovation and Employment (MBIE) has released an Issues Paper on the Plant Variety Rights Act 1987. The review seeks to formulate PVR legislation that can fulfil the main objectives of:

promoting innovation and economic growth by incentivising the development and dissemination of new plant varieties while providing an appropriate balance between the interests of plant breeders, growers and society as a whole;

being compliant with New Zealand’s international obligations; and

being consistent with the Treaty of Waitangi.

Currently, New Zealand’s Plant Variety Rights Act (PVR Act) is compliant with the 1978 version of the International Union for the Protection of New Varieties of Plants (UPOV 1978), but not the most recent version (UPOV 1991). In order to meet obligations under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) New Zealand must either ratify UPOV 1991 or put in place a regime that gives effect to it, within three years of the CPTPP coming into force. The CPTPP is likely to come into force for New Zealand in late 2018 or early 2019. This means updated PVR legislation would need to be in place by late 2021 or early 2022. Following the consultation and review phase a Bill to amend the PVR Act is planned to be introduced to Parliament in the second quarter of 2020.

Making New Zealand’s PVR Legislation UPOV 1991 compliant will result in a strengthening of the exclusive rights of rights holders and would also extend to harvested material or products made directly from harvested material and to new varieties that are ‘essentially derived’ from their protected varieties. Further, the current exception that allows reproduction and use of a protected variety for non-commercial purposes would be further narrowed by requiring the use to be both non-commercial and private.

In meeting its CPTPP obligations to become UPOV 1991 compliant the New Zealand government can adopt any measure that allows it to also meet its obligations under the Treaty of Waitangi. Following its enquiry into the Wai 262 claim the 2011 report of the Waitangi Tribunal recommended the following changes to the PVR legislation.

(a) that the Commissioner of Plant Variety Rights (the Commissioner) be empowered to refuse a PVR that would affect the kaitiaki (guardianship) relationship;
(b) that the Commissioner be supported by a Māori advisory committee in his/her consideration of the kaitiaki interest;
(c) to clarify the level of human input into the development of a plant variety for the purposes of PVR protection; and
(d) to enable the Commissioner to refuse a proposed name for a plant variety if its use would be likely to offend a significant section of the community, including Māori.

Currently less than 1% of New Zealand’s indigenous plant species have had PVR’s derived from them.

Currently farmers do not need the PVR owner’s permission to save and use seeds from the produce they grow from a protected variety, although they cannot produce for sale, offer for sale or sell that seed without the PVR owner’s permission. PVR owners can obtain royalties from the sale of seeds of a PVR either at the point of sale of the seeds (seed point royalties) or according to the amount of produce resulting from the seed (end point royalties). If a farmer uses farm saved seed and pays an end-point royalty to the PVR owner the PVR owner will effectively receive a royalty on that farm saved seed.

The strengthened rights available under UPOV 1991 effectively give PVR owners’ rights to royalties in relation to farm saved seeds, although a specific exception allows contracting parties to permit farmers to use harvested material as propagating material provided that the legitimate interests of the breeder are safeguarded. Contracting countries have generally either allowed this exception to be royalty free or subject to a reduced royalty.

MBIE seeks feedback by Friday 21st December 2018 on the 40+ questions raised in the issues paper, which mostly relate to the following issues: fulfilment of the above noted main legislative objectives; whether farm saved seeds should be exempt; assessment of distinctness and whether and how an ‘essentially derived’ test should be introduced; whether the rarely used compulsory licence, infringement and enforcement provisions are adequate; whether a disclosure of origin requirement should be introduced; and whether mere discovery is insufficient to make a claim of ownership.

Introduction of Disclosure of Origin Requirement Under Considreation
In tandem with the review of the Plant Variety Act 1987 MBIE is also considering introducing a disclosure of origin requirement in relation to genetic resources or traditional knowledge forming part of the subject matter of a patent application. Options for a disclosure of origin requirement range from:

(i) a statement of the country in which the genetic resource was first discovered or the traditional knowledge was first used or declaration that such is not known; to
(ii) also specifying whether the traditional knowledge was obtained from indigenous people or local community or from a publication as well as the source used for the genetic material; or further up to;
(iii) in addition to (ii) also complying with international Access and Benefit Sharing (ABS) arrangements under the Nagoya protocol.

MBIE outsourced a cost-benefit analysis of these options. The resulting report found that the first two options would likely involve a small increase in costs for both applicants and IPONZ, while the third option would have costs in the order of five times as much due to additional research and processing times as well as on-going benefit sharing costs.

3. Designs

United States of America

Single 2-D Plan-View of 3-D Feature can be Sufficient
The recent Court of Appeal for the Federal Circuit (CAFC) case of In re Maatita ruled that a design patent application was not indefinite and non-enabled merely on account of containing only one two-dimensional perspective of the claimed novel features.

The design in question involved ornamental features on the base of an athletic shoe as shown here. In particular, the five midline seashell shaped features, the three tooth shaped features on the outer and the connection between the two, all shown in solid lines.

The examiner raised indefiniteness and non-enablement objections on the grounds that the use of a single, two-dimensional plan-view to disclose a three-dimensional shoe bottom design left the design open to multiple interpretations regarding the depth and contour of the claimed elements. In support of which the examiner contended that the following distinct 3-D depictions are consistent with the above 2-D depiction.Example 1Example 2Example 3Example 4
Maatita argued that a person of ordinary skill would be capable of producing the claimed design by selecting appropriate depth and contour. However, the Patent Trial and Appeal Board (PTAB) upheld the examiner’s rejection of the application on indefiniteness and non-enablement grounds.

The CAFC noted that in the design patent context with disclosure being limited to drawings there is little difference between definiteness (clarity regarding the scope of the claim) and enablement (sufficiently described to enable an average designer to make the design). The CAFC then went on to note from earlier statements by the Supreme Court (in the utility patent context) that the purpose of the definiteness requirement is to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what is claimed and therefore what would infringe. Given that infringement of design patents is assessed from the perspective of an ordinary observer familiar with the prior art, it was held that indefiniteness should be assessed according to whether such an ordinary observer would understand the scope of the design with reasonable certainty based on the claim and visual disclosure.

The CAFC then noted that 3-D articles such as whole shoes cannot be adequately disclosed from a single plan-view or planar-view drawing, while 2-D articles such as a rug can be adequately disclosed from such a single drawing. While noting that shoe bottoms have 3-D aspects, the CAFC held that this does not change the fact that their ornamental design is capable of being disclosed and judged from a 2-D plan-view or planar-view perspective. Consequently, the CAFC reversed the PTAB’s ruling on the basis that Maatita’s single 2-D drawing is sufficient for a shoe designer of ordinary skill to determine whether their design will infringe and so meets the enablement and definiteness requirements.

4. Trade Marks

New Zealand

Similarity of Information Technology Services Considered
In 2018 NZIPOTM 25 Mobit Limited v Mobit Technologies Limited the Assistant Commissioner only partially upheld an opposition to the registration of an substantially identical mark to a different proprietor where both parties are in the information technology field.

Mobit Technologies application for this device mark was accepted for the following services in class 42: installation, configuration, fault diagnosis, repair, upgrading and maintenance of computer software; building, development and maintenance of websites. Mobit Limited have a registration for MOBIT in classes 35 and 38 broadly covering advertising, marketing and promotional services and mobile, satellite, cellular communication and interactive telecommunications services.

One of Mobit Limited’s grounds of opposition to the device mark was that it would be likely to deceive or cause confusion (section 17(1)(a)). While noting that the device mark has some distinguishing features from the registered word mark the Assistant Commissioner nonetheless found that the device mark is phonetically and visually substantially identical and that there is little reason to consider that consumers would find the marks conceptually distinct. Under section 17(1)(a) it is the opponent’s actual use of their mark that needs to be considered for determining the reputation they have in the mark. On this basis the Assistant Commissioner found that the opponent had established reputation in their mark in the following goods and services: an SMS/mobile marketing platform; mobile marketing services designed for smartphones; training services and the design of integrated mobile web pages. After considering the uses, users, physical nature, trade channels and degree to which the respective party’s services are competitive, the Assistant Commissioner found that with the exception of the building, development and maintenance of websites there was no risk of consumer deception or confusion. In making this finding the Assistant Commissioner cautioned against assuming similarity of services merely on account of both being in the information technology field.

Overall, I observe that computer software is now ubiquitous, and many disparate goods and services employ software and information technology generally. The mere fact that two categories of goods and/or services both use, incorporate, or relate to computer software is not enough, on its own, to render them similar.

Mobit Limited also argued that Mobit Technologies was not entitled to claim ownership of the mark on the basis that Mobit Limited used their mark before Mobit Technologies used the mark applied for. However, the evidence showed that Mobit Technologies used the word “Mobit” on their website prior to Mobit Limited’s use and that this constituted prior use of a substantially identical mark. Hence, Mobit Technologies were entitled to their ownership claim.